EU legislation allows applicants to register the shape of products and their packaging. This can be done through the registration of a design right on the shape of the product. Alternatively, an unconventional sign on the dimensional form of a product may be registered as a trademark.
In order to prevent the creation of monopolies over the functional characteristics of products, EU legislation imposes certain requisites that need to be met before an exclusive trademark is granted over the shape of a product.
One of the key requirements is the distinctiveness of the mark, in the sense that the marks have to identify the commercial origin of the products. Only then can the mark be considered to perform the essential trademark function. This requirement can be satisfied either by showing that the mark has inherently distinctive elements or, in the case of descriptive marks, by showing that the mark has acquired distinctiveness through long-lasting use by consumers who begin to associate a certain product with a particular manufacturer.
Unconventional signs, such as shapes or 3D marks, are particularly difficult to register on the basis that these may either lack distinctive character, a requirement for all trademarks, or consist exclusively of a shape that is necessary to obtain a technical result, an aspect peculiar to non-conventional marks.
The Court of Justice of the European Union (CJEU) adopted a strict approach in the interpret-ation of these elements when it comes to product shapes, their packaging and 3D marks.
The UK High Court sought guidance from the CJEU following opposition proceedings filed by Cadbury against Nestlé after the latter applied to register a three-dimensional sign representing the shape of a four-finger chocolate-coated wafer bar as a trademark in the UK. The High Court requested a preliminary ruling on whether it is possible for an undertaking to secure a permanent monopoly by registering a three-dimensional sign as a trade mark, and in particular on how the distinctive character of shapes is to be assessed.
The UK Intellectual Property Office rejected the registration of the Kit Kat shape on the basis that it was devoid of distinctive character, even though Nestlé was able to show that a significant proportion of UK consumers automatically associate the shape of the four-finger wafer with Kit Kat.
Nestlé appealed this decision and the High Court made a reference to the CJEU. Before its preliminary ruling, the Court’s Advocate General issued its Opinion on the matter in dispute.
The Advocate General (AG) took the view that the shape of the Kit Kat bar would not be eligible for registration as a trademark. The AG drew this conclusion from the fact that, in terms of EU legislation, trademarks that are devoid of distinctive character, signs that consist exclusively of the shape which results from the nature of the goods themselves, or the shape of goods is necessary to obtain a technical result, cannot be validly registered.
The Advocate General affirmed that the primary function of a trademark is to identify or guarantee the identity of the origin of the goods. The AG acknowledged that distinctiveness can be either inherent in the product or acquired through the use made of the mark. The assessment of whether a particular sign fulfils this requirement must be based on the perception of an average consumer of the category of goods in question, who is reasonably well informed, observant and circumspect.
Considering these factors, the AG opined that although there may be a general recognition of the shape of the Kit Kat wafer, this did not necessarily mean that consumers perceive it as an indicator of origin. For this reason, the AG did not consider that the Kit Kat wafer shape was capable of identifying the origin of the goods by itself.
The AG also considered the features of the Kit Kat product – namely the basic rectangular shape and the grooves running lengthwise. The AG indicated that an assessment of whether a shape is necessary to obtain a technical result requires an analysis of the manner in which the shape is manufactured, and not just the manner in which the product itself functions.
The matter will now proceed for final judgment before the CJEU, following which the UK High Court will give its decision on the merits of Cadbury’s opposition to the registration of Kit Kat’s 3D mark.
jgrech@demarcoassociates.com
Josette Grech is adviser on EU law at Guido de Marco & Associates.